Ex Parte Majerowski et al

Patent Trial and Appeal Board

Sep 29, 2017

13809512 (P.T.A.B. Sep. 29, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/809,512 02/05/2013 AMP,LI A H. MAJEROWSKI J-5305A 8607
28165 7590
S.C. JOHNSON & SON, INC.
1525 HOWE STREET
RACINE, WI53403-2236
EXAMINER
KIM, CHRISTOPHER S
ART UNIT PAPER NUMBER
3752
NOTIFICATION DATE DELIVERY MODE
10/03/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
F074168@scj.com
selechne @ scj. com
mjzolnow @ scj .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMELIA H.MAJEROWSKI, MARK E. WEFLER,
GREGORY A. FALDUTO, and KEVIN HARRITY
Appeal 2016-008617
Application 13/809,512
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Amelia H. Majerowski et al. (“Appellants”)1 appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision rejecting claims 1—4 and 7—10. See
Appeal Br. 2. Claims 5, 6, and 11—15 have been withdrawn. See id. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is S. C. Johnson &
Son, Inc. Appeal Br. 2.
Appeal 2016-008617
Application 13/809,512
CLAIMED SUBJECT MATTER
Appellants’ disclosed invention relates to “an air freshening system.”
Spec. 14. Claim 1, reproduced below, is the sole independent claim
appealed and is representative of the subject matter on appeal.
1. An air freshening system, comprising:
a container (54) having a permeable membrane (120)
disposed thereon and a volatile material (56) disposed therein;
an impermeable laminate (122) releasably attached to the
permeable membrane (120) and adapted to be removed
therefrom prior to use;
a stem (52); and
characterized in that an attachment mechanism is adapted
to retain the container (54) on the stem (52).
EVIDENCE
The Examiner relied on the following evidence
on appeal:
Schwartz US 4,157,787
Spector US 4,283,011
Freytag Von US 4,708,851
Loringhoven
REJECTIONS
The following rejections are before us for review:
I. Claims 2 and 3 stand rejected under 35U.S.C. § 112, second
paragraph, as being indefinite. Final Act. 3.
II. Claims 1—3 and 7 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Spector. Id.
in rejecting the claims
June 12, 1979
Aug. 11, 1981
Nov. 24, 1987
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III. Claims 8—10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Spector. Id. at 4.
IV. Claims 1—4 and 7—10 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Freytag Von Loringhoven and
Schwartz. Id. at 4—6.
ANALYSIS
Rejection I— Claims 2 and 3 as indefinite
Claim 2 recites, in relevant part, “at least one of the base (114) and the
sidewalls (116) are in the shape of a naturally occurring object.” Appeal
Br. 12 (Claims App.). The Examiner determined that “the recitation ‘a
naturally occurring object’ renders the claim indefinite because what
naturally occurs is subject to change.” Final Act 3. According to the
Examiner, “it would be impossible to determine the composition of all of the
naturally occurring objects on a given date.” Ans. 6. We do not agree with
this determination because the issue raised by the Examiner with respect to
the claim language is one of breadth, but not indefiniteness. Although we
appreciate that a near endless myriad of “naturally occurring” shapes could
satisfy this broad limitation, a broad claim is not necessarily indefinite. See
In re Johnson, 558 F.2d 1008, 1016 n.17 (CCPA 1977); In re Miller, 441
F.2d 689, 693 (CCPA 1971); In re Gardner, All F.2d 786, 788 (CCPA
1970).
Accordingly, we do not sustain the rejection of claim 2, and its
dependent claim 3, under 35 U.S.C. § 112, second paragraph, as being
indefinite.
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Rejections II and III— Claims 1—3 and 7—10 as
anticipated by, or unpatentable over, Spector
Claims 1 and 7—10
In rejecting independent claim 1, the Examiner found that “Spector
discloses an air freshening system comprising: a container 13; a permeable
membrane 11; a volatile material (liquid scent); an impermeable
laminate 12; a stem (stem of apple); [and] an attachment mechanism
(bonding material, column 3, line 15).” Final Act. 3. The Examiner clarifies
in the Answer that “[t]he permeable membrane 11 has two elements: the
edible portion of the apple and the stem of the apple,” and that “[t]he
impermeable laminate 12 also has two elements: the edible portion of the
apple and the stem of the apple.” Ans. 6.
Appellants argue that Spector fails to disclose a stem, as recited in
claim 1, which is “a separate element from the other claimed components,
including the permeable membrane and the impermeable laminate.” Appeal
Br. 5. In particular, Appellants assert that the Examiner’s reliance on the
stem portion of applique sheet 10 with perforations 11 (i.e., permeable
membrane) or removable seal 12 (i.e., impermeable laminate) “reduce[s] the
stem to a component of another claimed element, even though they are
recited as separate elements.” Id. at 6. According to Appellants, “neither
the permeable membrane nor the impermeable laminate of Spector are
composed of ‘two distinct elements,’” but “[ijnstead, the membrane and the
laminate each are continuous surfaces.” Reply Br. 6.
We are not persuaded by Appellants’ argument. To the extent that
Appellants argue that the claimed stem must be a separate, non-unitary
feature that cannot be continuous with the permeable membrane or
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Application 13/809,512
impermeable laminate, such an argument is unpersuasive because it is not
commensurate with the scope of claim 1. See In re Self, 671 F.2d 1344,
1348 (CCPA 1982) (noting that it is well established that limitations not
appearing in the claims cannot be relied upon for patentability). Here,
claim 1 recites only that “a stem” is one element of the air freshening
system, and does not recite that the stem has any particular structure or
function. See Appeal Br. 12 (Claims App.). Claim 1 does not recite that the
stem must be a separate, non-unitary feature, nor does the claim recite any
structural limitations that would exclude the stem from being continuous
with the permeable membrane or impermeable laminate. In other words,
although Spector does not appear to disclose that the apple stem portion of
applique sheet 10 or removable seal 12 is a separate, non-unitary feature,
this is not required by the claim. Thus, Appellants do not persuade us of a
patentable distinction between the apple stem portion of Spector’s applique
sheet 10 or removable seal 12, as relied on by the Examiner, and “a stem”
recited in claim 1.
Appellants also argue that, “even assuming, arguendo, that the alleged
‘stem portion’ of the applique 10 or of the seal 12 corresponds to the
claimed stem, claim 1 further requires that an attachment mechanism is
adapted to retain the container on the stem.” Appeal Br. 6. Appellants
assert that Spector’s “seal 12 is completely separated from the dish 13 by the
applique 10.” Id. In response to Appellants’ argument, the Examiner
explains that Spector’s “container 13 is indirectly held in place or position
on the stem, i.e., the container is held in place/position relative to the stem,
by intervening structures: the bonding material and the edible portion of the
apple.” Ans. 8.
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Although we appreciate Appellants’ observation that claim 1 recites
that “the attachment mechanism is adapted to retain the container ‘on’ the
stem, not ‘relative to’ the stem” (Reply Br. 7), Appellants’ argument is not
persuasive of Examiner error. As discussed above, the Examiner found that
Spector discloses an attachment mechanism in the form of a bonding
material. See Final Act. 3 (citing Spector, col. 3,1. 15). Spector discloses
that flange 16 of dish 13 is bonded to the back of applique sheet 10.
Spector, col. 3,11. 15—16. In other words, Spector’s bonding material retains
dish 13 (i.e., container) on the back of applique sheet 10. Given that
Appellants do not persuade us of error in the Examiner’s finding that the
stem portion of Spector’s applique sheet 10 meets the stem element recited
in claim 1, we are not convinced of a patentable distinction between
Spector’s disclosure and “an attachment mechanism . . . adapted to retain the
container (54) on the stem (52),” as recited in the claim.
For these reasons, Appellants’ arguments do not apprise us of error in
the Examiner’s finding that Spector anticipates the subject matter of claim 1,
which is supported by a preponderance of the evidence. Accordingly, we
sustain the rejections of independent claim 1, and of dependent claims 7—10,
for which Appellants do not present any separate arguments (see Appeal
Br. 7), under 35 U.S.C. § 102(b) as anticipated by, or under 35 U.S.C.
§ 103(a) as unpatentable over, Spector.
Claims 2 and 3
Claim 2 depends from claim 1, and further recites, in relevant part,
that “at least one of the base (114) and the sidewalls (116) are in the shape of
a naturally occurring object.” Id. at 12 (Claims App.). Claim 3 depends
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from claim 2, and further recites that “the shape of the naturally occurring
object is in the shape of at least one of a flower, an herb, a leaf, and a
botanical object.” Id. Appellants argue that “[t]he Examiner does not point
to any structure in Spector as allegedly teaching these limitations.” Id.
at 7, 8. This argument is not persuasive of error.
The Examiner clarifies in the Answer that Spector’s “[cjontainer 13
has a circular base, [] ffustoconical sidewalls (inside sidewall, outside
sidewall) extending upwardly therefrom[,] and a peripheral flange 16
attached to the top edge of the sidewalls.” Ans. 8. The Examiner finds that
“[t]he base and the sidewalls have the shape of a circle,” which “is a shape
of a naturally occurring object,” as called for in claim 2. Id.', see id.
(explaining that, for example, “[a] rainbow has a shape of a circle”). With
respect to claim 3, the Examiner finds that “a circle is a botanical object”
because, “[i]n botany, a rosette is a circular cluster of leaves or other
organs.” Id. at 9. In this regard, Appellants do not specifically address or
identity error in the Examiner’s findings, which are supported by a
preponderance of the evidence. See Reply Br. 4 (relying on the arguments
asserted with respect to claim 1). As such, Appellants do not apprise us of
error in the rejection of claims 2 and 3 as anticipated by Spector, which we,
thus, sustain.
Rejection IV— Claims 1—4 and 7—10 as unpatentable
over Freytag Von Loringhoven and Schwartz
Claims 1 and 7—10
In rejecting independent claim 1, the Examiner found that Freytag
Von Loringhoven discloses an air freshening system that includes “a
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container la, 3, 6; a stem lb; [and] an attachment mechanism (attachment
between petals la and stem lb).” Final Act. 5. The Examiner
acknowledged that Freytag Von Loringhoven “does not disclose a container
having a permeable membrane and an impermeable laminate attached to the
permeable membrane,” but found that “Schwartz discloses a container 12
having a permeable membrane 20 and a volatile material 14.” Id. The
Examiner concluded that, given the teachings of the prior art, it would have
been obvious “to have replaced the carrier 3, 4, 6 of Freytag Von
Loringhoven with the container of Schwartz to prevent dispensing until the
user desires to release the air freshener agent.” Id.
Appellants argue that the Examiner’s proposed combination of
Freytag Von Loringhoven and Schwartz is in error “because [Freytag Von
Loringhoven] disparages and teaches away from the use of perforated
deodorizers, such as those disclosed in Schwartz.” Appeal Br. 8. In
particular, Appellants assert that Freytag Von Loringhoven disparages
conventional deodorizers having complex holder structures that are cost
prohibitive and problematic in handling and assembling. See id. at 9 (citing
Freytag Von Loringhoven, col. 1,11. 20-23, 35—38, 43—51). Appellants also
assert that “the Examiner relies on Schwartz for its dispenser teaching, and it
is that dispenser that [Freytag Von Loringhoven] disparages, i.e., the
permeated housing that permits airflow to release the fragrance, regardless
of the manner in which the fragrance is held in that housing.” Id. (emphasis
omitted). According to Appellants, “regardless of whether Schwartz teaches
an impermeable laminate releasably attached to a permeable membrane, it
also teaches the other dispenser elements allegedly missing from and
disparaged by [Freytag Von Loringhoven].” Reply Br. 8.
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We are not persuaded by Appellants’ argument because it does not
identify why a person of ordinary skill, upon reading the reference, would be
led in a direction divergent from the path taken by Appellants. See In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Appellants do not identify, nor
do we discern, any passage in Freytag Von Loringhoven that criticizes,
discredits, or otherwise discourages the combination of teachings proposed
by the Examiner. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)
(prior art does not teach away from claimed subject matter merely by
disclosing a different solution unless the prior art also criticizes, discredits,
or otherwise discourages the solution claimed). To the extent that the cited
portions of Freytag Von Loringhoven discuss disadvantages in room
deodorizers having complex housing structures for holding a fragrance
carrier, Appellants do not persuasively explain why such disclosure
criticizes, discredits, or otherwise discourages using Schwartz’s fragrance
container in combination with Freytag Von Loringhoven’s flower-shaped
holder, as proposed by the Examiner. Instead, Freytag Von Loringhoven
appears to contemplate, rather than disparage, using sealed fragrance carriers
similar to that disclosed by Schwartz. See Freytag Von Loringhoven, col. 2,
11. 23—24 (disclosing that the fragrance carrier plugs are “preimpregnated, in
a cellophane, plastic or other odor-tight wrapper”); see also Schwartz, col. 2,
11. 11—13 (disclosing a fragrance container in which, “the upper nonporous
layer is removed, and the evaporating material then permeates through the
remaining porous layer”).
Moreover, the Examiner’s proposed modification of Freytag Von
Loringhoven’s flower-shaped holder to replace the fragrance carrier plug
with the fragrance container of Schwartz does not amount to “more than the
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simple substitution of one known element for another or the mere
application of a known technique to a piece of prior art ready for the
improvement.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Further, “in many cases a person of ordinary skill will be able to fit the
teachings of multiple patents together like pieces of a puzzle” because “[a]
person of ordinary skill is also a person of ordinary creativity, not an
automaton.” Id. at 420—21. Appellants do not provide any factual evidence
or persuasive technical reasoning to explain how combining the known
teachings of the cited art to arrive at an air freshening system arranged as in
the claim would be unpredictable or somehow beyond the level of ordinary
skill in the art. See id. at 417.
After careful consideration of all the evidence, Appellants’ argument
does not apprise us of error in the Examiner’s findings or reasoning in
support of the conclusion of obviousness. Accordingly, we sustain the
rejection of independent claim 1, and of dependent claims 7—10, for which
Appellants do not present any separate arguments (see Appeal Br. 8—10;
Reply Br. 7—8), under 35 U.S.C. § 103(a) as being unpatentable over Freytag
Von Loringhoven and Schwartz.
Claim 2
In contesting the rejection of claim 2, Appellants argue that “[t]he
Examiner does not point to any structure in [Freytag Von Loringhoven] as
allegedly teaching a peripheral flange attached to a top edge of sidewalls.”
Appeal Br. 10. Appellants assert that, “even if one of ordinary skill were to
‘replace[] the carrier 3, 4, 6 of Freytag Von Loringhoven with the container
of Schwartz’ as suggested by the Examiner, e.g., in order to incorporate its
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flange, that flange would be disposed within the flower structure of [Freytag
Von Loringhoven].” Id. (quoting Final Act. 5). According to Appellants, if
Freytag Von Loringhoven’s ‘“flower petals’ were considered to be the
claimed sidewalls, then the flange would not be ‘attached to a top edge of
the sidewalls’ as claim 2 requires.” Id. This argument is not persuasive.
The Examiner clarifies in the Answer that the proposed modification
of Freytag Von Loringhoven includes “placing the device of Schwartz
within the rose [petals] of [Freytag Von Loringhoven].” Ans. 9. The
Examiner explains that the resulting “container would include a base (the
base of the rose [petals]) and sidewalls (the [petals] extending upward) and a
peripheral flange (the horizontal ledge of the [petals] at the top).” Id.
at 9-10. According to the Examiner, “[t]he base and/or the sidewalls are in
the shape of a naturally occurring object (a rose).” Id. at 10. In this regard,
Appellants do not specifically address or identify error in the Examiner’s
findings and reasoning. Other than the bare assertion that the combination
of Freytag Von Loringhoven and Schwartz would not include a flange
attached to the top edge of the sidewalls (see Appeal Br. 10), Appellants do
not set forth any factual evidence or persuasive technical reasoning to
explain why the Examiner’s position is in error.
Accordingly, we sustain the rejection of claim 2 as being unpatentable
over Freytag Von Loringhoven and Schwartz.
Claim 3
In contesting the rejection of claim 3, Appellants argue that “the
Examiner has not pointed to any naturally occurring flowers, herbs, leaves,
or botanical objects that resemble [Freytag Von Loringhoven’s] base or
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sidewalls.” Appeal Br. 10. This argument is not persuasive of error,
because, as the Examiner explains, “[Freytag Von Loringhoven] in view of
Schwartz discloses a naturally occurring object that is in the shape of a
flower (a rose).” Ans. 10. In this regard, Appellants do not specifically
address or identity error in the Examiner’s findings and reasoning set forth
with respect to claim 3, which are supported by a preponderance of the
evidence. See Reply Br. 8 (relying on the arguments asserted with respect to
claim 1).
Accordingly, we sustain the rejection of claim 3 as being unpatentable
over Freytag Von Loringhoven and Schwartz.
Claim 4
Claim 4 recites that “the attachment mechanism includes a
channel (130) for receipt of the stem (52).” Appeal Br. 12 (Claims App.).
Appellants argue that “[t]he Examiner points to no structure in either
[Freytag Von Loringhoven] or Schwartz as allegedly teaching or suggesting
this limitation.” Id. at 11 (citing Final Act. 5). This argument does not
identity error in the rejection. As clarified in the Answer, the Examiner
finds that Freytag Von Loringhoven “shows an attachment mechanism that
includes a channel for receipt of the stem.” Ans. 10 (including annotated
reproduction of Figure 1 of Freytag Von Loringhoven identifying the
location of the channel that receives the stem). Other than the bare assertion
that the cited portions of Freytag Von Loringhoven “do[] not contain any
such disclosure” (Appeal Br. 11 (citing Freytag Von Loringhoven, Figs. 1, 2;
col. 2,11. 35—50)), Appellants do not offer any factual evidence or persuasive
technical reasoning to explain why the Examiner’s finding is in error.
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Accordingly, we sustain the rejection of claim 4 as being unpatentable
over Freytag Von Loringhoven and Schwartz.
DECISION
We REVERSE the Examiner’s decision rejecting claims 2 and 3
under 35U.S.C. § 112, second paragraph, as being indefinite.
We AFFIRM the Examiner’s decision rejecting claims 1—3 and 7
under 35 U.S.C. § 102(b) as anticipated by Spector.
We AFFIRM the Examiner’s decision rejecting claims 8—10 under
35 U.S.C. § 103(a) as being unpatentable over Spector.
We AFFIRM the Examiner’s decision rejecting claims 1—4 and 7—10
under 35 U.S.C. § 103(a) as being unpatentable over Freytag Von
Loringhoven and Schwartz.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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